U.S. Trademarks Informational Overview

U.S. Trademarks Informational Overview

SUMMARY

Trademark protection in the United States is a key aspect of intellectual property rights. Trademarks help distinguish goods or services and provide commercial benefits and competitive advantages to owners.

Trademark Basics

• Trademarks include words, phrases, or logos that identify their sources of goods or services.

• A trademark creates brand distinction and customer loyalty through commercial use.

Application and Legal Scope

• Common law trademark rights: These rights begin when a trademark is used in commerce. Common law trademark rights are geographically limited to areas where the mark is actively used.

• Federal trademark registration: Registration with the USPTO grants exclusive nationwide rights, legal presumptions of ownership, potential statutory damages, and protection against counterfeit imports via customs enforcement.

• State trademark registration: State trademark registrations protect marks within state borders.

A MORE DETAILED OVERVIEW

Trademark protection is a major pillar of intellectual property (IP) rights. Other IP rights include patents, copyrights, and trade secrets. This informational specifically covers federal trademark protection in the United States of America.

A trademark can be a word, phrase, and/or logo/design that identifies the source of goods or services. A trademark provides its owner with exclusive use of that mark to identify the goods or services of the owner relative to others’ goods or services of the same type.

A trademark derives its value from its use in commerce. That is, a trademark provides a commercial benefit and competitive advantage by distinguishing a character or brand of the source of goods or services relative to other sources of the same type of goods or services. A trademark can create a thoughtful or emotional connection in the minds of consumers between the mark and its associated goods or services. By commercializing goods or services in this manner, a trademark can be beneficial in creating a loyal customer base. For these reasons, a trademark can be a valuable asset that is key to commercial success.

In general, trademarks are protectable based on common law or registration.

Trademark rights based on common law commence as soon as a mark is used in commerce in connection with goods or services. Common law rights are derived from case law. Case law is based on precedential court opinions defining equitable resolutions to disputes between parties. Such case law related to trademarks creates the foundation for common law resolutions in subsequent similar disputes.

In general, enforceability of trademark common law rights is limited to the geographies in which a mark is used in commerce. For example, if a trademark is used in a state or only a portion of the state, common law rights can be limited by courts to only that state or state portion. As such, competitors may be allowed to lawfully use the same trademark in locations outside of the protectable geography.

Unlike common law rights, federal trademark registration is secured through a trademark application filed in the United States Patent and Trademark Office (USPTO). For example, after the USPTO examines a trademark application and determines that the subject mark satisfies all the requirements for registration, the USPTO grants a federal registration of the trademark.

Federal trademark registration offers several benefits over common law trademark protection. Most prominently, a federally registered trademark gives the owner the exclusive right to use the mark in commerce anywhere in the U.S. in connection with the goods or services identified in the registration. In addition, a federally registered trademark creates a presumption of ownership and validity of the mark should the trademark owner ever pursue a legal claim against an infringing party. Also, a federally registered trademark allows for statutory damages and attorney fees to be awarded to the prevailing trademark owner in a trademark infringement suit.

Another benefit of federal trademark registration relates to preventing importation of counterfeit goods. For example, after a trademark is granted federal registration, the trademark can be recorded with U.S. Customs and Border Protection (CBP). CBP can use such recordation to detain and seize imported goods that violate the registered trademark.

Another type of trademark registration is state trademark registration. A state trademark registration can be used to prevent others from using the state registered mark for associated goods or services within the borders of that state.

An intellectual property attorney can be a valuable resource in navigating the complexities of the trademark application and registration process. An intellectual property attorney can assist in determining what types of hurdles may be faced in applying for federal trademark registration and determining how to structure a federal trademark application before filing.

IMPORTANT DISCLAIMER- The contents of this document are not legal advice, do not create an attorney-client relationship, and do not establish an attorney-client privilege. Instead, this document is for general informational and/or educational purposes only.

This document is not a substitute for consulting a licensed attorney. A consultation with a licensed attorney is necessary to consider a complete picture of your circumstances and to provide you with a personalized recommendation.